DECISION

 

StudioMDHR Entertainment, Inc. v. Yacine Azoulay

Claim Number: FA2312002075100

PARTIES

Complainant is StudioMDHR Entertainment, Inc. ("Complainant"), represented by Thomas Dietrich of The McArthur Law Firm, PC, California, USA. Respondent is Yacine Azoulay ("Respondent"), Algeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cupheadmerchandise.com>, registered with Alibaba.Com Singapore E-Commerce Private Limited.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 13, 2023; Forum received payment on December 13, 2023.

 

On December 13, 2023, Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to Forum that the <cupheadmerchandise.com> domain name is registered with Alibaba.Com Singapore E-Commerce Private Limited and that Respondent is the current registrant of the name. Alibaba.Com Singapore E-Commerce Private Limited has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@cupheadmerchandise.com. Also on December 19, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

1.       Complainant is a Canadian company engaged in the provision of video games and other products for entertainment including the highly popular Cuphead video game which was announced in 2013 and released in 2017.

2.       Complainant has rights in the trademark for CUPHEAD, registered number 5,424,473, registered with the United States Patent and Trademark Office ("USPTO") on March 13, 2018 for computer and games software, certain clothing and toys and related goods and services and in other trademarks which are variations and derivatives (collectively "the CUPHEAD trademark").

3.       Complainant is also the owner of the domain name <cupheadgame.com> which it uses in its business as an official domain name and for its own website.

4.       Respondent registered the <cupheadmerchandise.com> domain name ("the disputed domain name") on May 19, 2022.

5.       In so doing, Respondent has incorporated in the disputed domain name the Complainant's CUPHEAD trademark without any authority to do so and has added the generic word "merchandise" and the gTLD ".com".

6.       Respondent has caused the disputed domain name to be used to resolve to a website to sell counterfeit Cuphead merchandise without authorization by  the Complainant and by that means to induce internet users to visit its site under the guise of offering genuine CUPHEAD products.

7.       Respondent has by that means infringed the Complainant's CUPHEAD trademark.

8.       The disputed domain name is confusingly similar to the CUPHEAD trademark.

9.       Respondent has no rights or legitimate interests in the disputed domain name because Respondent is using the CUPHEAD trademark without authorization and to sell counterfeit CUPHEAD merchandise.

10.       Respondent has registered and is using the domain name in bad faith as it has registered and used the domain name to sell counterfeit merchandise without authority.

11.       The contents of the Respondent's website adds to the likelihood of confusion with the Complainant, as the Respondent has copied the Complainant's mark and replicates the look and feel of its website and uses images designed to capitalize on the reputation and good will associated with the Complainant by implying that it actually is the Complainant or that it operates its website with the approval of the Complainant.

12.       Accordingly, the Complainant submits that it has established the elements required to be proved under the Policy and that the disputed domain name should be transferred to the Complainant.

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant is a Canadian company engaged in the provision of video games and other merchandise for entertainment including the highly popular Cuphead video game which was announced in 2013 and released in 2017.

2.       Complainant has established its rights in the trademark for CUPHEAD, registered number 5,424,473, registered with the United States Patent and Trademark Office ("USPTO") on March 13, 2018 for computer and games software, certain clothing and toys and related goods and services and in other trademarks which are variations and derivatives ("the CUPHEAD trademark").

3.       Respondent registered the <cupheadmerchandise.com> domain name ("the disputed domain name") on May 19, 2022.

4.       In so doing, Respondent has incorporated in the disputed domain name the Complainant's CUPHEAD trademark without any authority to do so and has added the generic word "merchandise" and the gTLD ".com".

5.       Respondent has caused the disputed domain name to be used to resolve to a website to sell counterfeit Cuphead merchandise without authorization by the Complainant and by that means to induce internet users to visit its site under the guise of offering genuine CUPHEAD products.

6.       The disputed domain name is confusingly similar to the Complainant's CUPHEAD trademark.

7.        Respondent has no rights or legitimate interests in the disputed domain name.

8.       Respondent has registered and used the disputed domain name in bad faith.

9.        Complainant has established the elements required to be proved under the Policy and the disputed domain name should therefore be transferred to the Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a

trademark or service mark on which it may rely in this proceeding. That is so because Policy ¶ 4(a)(i) provides that the Complainant must show that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights."

 

The evidence shows that Complainant has established its rights in the trademark registered in its name for CUPHEAD, being registered number 5,424,473 and registered with the USPTO on March 13, 2018 for computer and games software, certain clothing and toys and related goods and services and other trademarks which are variations and derivatives (collectively "the CUPHEAD trademark"). See, in that regard, the Complainant's Annex 1 to the Complaint.

 

The Complainant has adduced evidence of the foregoing and related  registrations, which the Panel has examined and which it finds in order. Registration of a trademark with a recognized authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Since Complainant has registered and has established its rights in the CUPHEAD trademark through its registration of the mark, the Panel finds that the Complainant has rights in the CUPHEAD trademark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant's CUPHEAD trademark. The Complainant argues that the disputed domain name is confusingly similar to its CUPHEAD trademark because it consists of the mark itself to which have been added the generic word "merchandise" and the gTLD ".com" which cannot negate a confusing similarity that is otherwise present between a domain name and a trademark, as it is in the present case. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant's CUPHEAD mark with the approval of the Complainant and that it relates to legitimate CUPHEAD merchandise offered for sale.  It is therefore clear that the domain name is similar to the trademark and confusingly so.

 

The Panel therefore finds that the Respondent's domain name is confusingly similar to Complainant's CUPHEAD trademark under Policy ¶ 4(a)(i).

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

 

The Panel finds on the evidence that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant's CUPHEAD  trademark and to use it in its domain name, adding the generic word "merchandise" and the gTLD ".com", neither of which negates the confusing similarity between the domain name and the mark, generating the clear impression that it is referring to and invoking the CUPHEAD trademark for its own purposes and that it is authorized to do so.

 

(b) Respondent registered the disputed domain name on May 19, 2022 which was well after the Complainant had acquired its rights in the trademark, namely on August 9, 2016 which the Respondent  had no right to do and no legitimate interest in doing so.

 

(c)       The evidence shows that Respondent has caused the disputed domain name to be used to resolve to a website and by that means to induce internet users to visit its site under the guise of offering an official CUPHEAD website and then to offer to users to purchase  goods that are in fact counterfeit, all of which conduct is illegitimate. This is set out in Annex 5 to the Complaint that the Panel has examined and has found to verify the Complainant's contentions. The Complainant's official website is set out in Annex 4 and a comparison can be made with that site and the Respondent's counterfeit site at Annex 5. It is obvious from the comparison that Annex 5 shows an attempt to copy features from the official site and to offer products that reflect those features and which are being offered under the same trademarked name. This can by no means give rise to a right or legitimate interest on the part of the Respondent in the domain name because it is clearly an improper use of the domain name and inevitably of the Complainant's trademark to induce potential customers to buy products from the counterfeit site which is inimical to the Complainant's interests.

 

(d)       Moreover, the evidence shows that the Complainant has not authorized the Respondent to use the CUPHEAD trademark at all. Despite this, the Respondent's website is populated by features using the Complainant's name, trademark and images to give the false impression that the website is genuine when it is not, and that the Respondent has permission to use the Complainant's name and trademark which it also does not have.

 

(e) The evidence also shows that the Respondent is not a licensee of the Complainant or its mark.

 

(f) For completeness, the evidence also shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i), is not commonly known by the disputed domain name within the meaning of Policy ¶4(c)(ii) and not making a legitimate noncommercial or fair use of the domain name within the meaning of Policy ¶4(c)(iii),  

 

(g) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.

 

All of these matters go to make out the prima facie case against the Respondent.

As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

The Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on general grounds of bad faith as well as the specific grounds articulated in the Policy.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered or used in bad faith. That is so for the following reasons.

 

First, as the Complainant submitted and as the Panel finds on the evidence, the Complainant has established that it has owned the CUPHEAD trademark since well prior to the date when the Respondent registered and first used the disputed domain name.

 

Secondly, as the Complainant has submitted and as the Panel finds, it must be bad faith registration and use for the Respondent to register and use the domain name to sell counterfeit CUPHEAD merchandise without the authorization of the Complainant as the trademark owner. The Complainant is therefore correct in submitting that the Respondent's website is an attempt by the Respondent to attract internet users by creating a likelihood of confusion with the Complainant in breach of Policy ¶4(b)(iv) as to the source, sponsorship, affiliation or endorsement of the website, the more so it must have been done for the Respondent's direct financial benefit. This is shown clearly by the Complainant's Annexes 4 and 5.

 

The same evidence shows that the Respondent has sought to disrupt the Complainant's business in breach of Policy 4 (b)(iii).

 

Thirdly, the evidence also shows that the Respondent must have had actual notice of the Complainant and its rights in the CUPHEAD trademark when it registered the disputed domain name.

 

Fourthly, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the CUPHEAD trademark and in view of the conduct that the Respondent has engaged in when using the domain name, the Respondent registered or used it in bad faith within the generally accepted meaning of that expression.

 

The Complainant has thus made out the third of the three elements that it must establish.

 

The Complainant has also thus shown that it has met all of the requirements of the Policy that it is obliged to prove and it is therefore entitled to the relief that it seeks.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cupheadmerchandise.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: January 10, 2024